Claim Drafting: 35 USC 112 Flashcards
What is the goal in writing claims?
Define the invention so that it works AND Define it as being different as prior art.
Example of Broad(Generic), Species and Sub-Species Claims
Generic Claim: “A roller skate having at least three wheels”
Species Claim: “A roller skate having four wheels”
Sub-Species Claim: “A roller skate having four wheels and a braking member”
a generic claim may be recite an incandescent lightbulb with a filament, while the species may include incandescent lightbulbs with a bamboo filament, a carbon filament, and a tungsten filament.
Process of Claiming
Start out broad. Then define using species and sub-species.
What makes up your original disclosure?
Specs
Drawings
Original Claims
What if you leave information out of either the specs, drawings or original claims?
You can shift them around without it being considered new matter. You cannot add new matter
What if you try to add something that is not supported in the specs, drawings or original claims?
You can only get by this by receiving a new filing date.
What is within the Scope of a claim?
Subject matter described in a generic or specific sense in the claim.
An Indefinite Claim violates what law?
112 (b) **Look out for double negatives
112(b) says that the spec will conclude with one or more claims distinctly claiming the subject matter, so an indefinite claim would violate this part of the statute.
Claim Arrangement and Numbering
Number 1 is an independent claim. Do not skip or reserve any numbers. You cannot change the numbers. Group claims that have the claims that depend on the independent claim.
After a notice of allowance, an examiner’s amendment can renumber claims
Objection v. Rejection
Rejection is based on the Law, 35 USC. Objection is based on the Rules 37 CFR. **A claim is OK if nothing can be rejected or objected.
Rule 1 Preamble
Introductory phrase that is not limited. Can be limiting when it breathes meaning into the body of the claim. Functional language is not wrong but could end up hurting the client.
Rule 2 Transition
Three ways of doing this 1. Comprising of 2. Consisting of (if you see this, be suspicious) 3. Consisting Essentially of **You can cover things that don’t work but don’t overdue it. Some cases say around 20% is OK but some say 50% don’t work makes it not good.
Rule 3 Antecedent Basis
The first time you introduce a limitation/internal reference you MUST introduce it with either: 1. “a” or 2. “an” Subsequently you refer to the limitation by: 1. “said” or 2. “the” **If failing to do so, then you fail by antecedent basis.
Patent Office Perspective
Examiner must have a reason to reject or object. LOOK FOR THE ONE THAT CANNOT BE EITHER.
Comprising of
This is open. “It has at least this but may have more”
Consisting of
This is closed “My invention is only the following” A way to say that the invention is exactly what it is.
Consisting Essentially of
If the novel characteristics of the invention would change by adding an element the transition is CLOSED.
If the novel characteristics of the invention would not change by adding an element the transition is OPEN.
How do you point things out that is not there?
Negative limitations - define what is around or surrounds the openings which are not there. **Define it as “this piece and this piece come together to create a cavity”
Dependent Claims
They MUST have a preamble, transition, and a body. Narrowing a Previous Claim: - the “invention “ of claim __ “where in” Can only depend on a previous claim
Alternative Expressions
“or” Only two instances: 1. Markush Groups OR 2. Multiple Dependent Claims
Markush Groupings
“wherein R is a material selected from the group CONSISTING of A, B, C and D” “wherein R is A, B, C or D”
**must be “consisting of” Examiner can reject for one combination but you can reach in and remove a member.
Multiple Dependent Claims
A dependent that refers back in the alternative to more than one preceding independent or dependent claim. “or” is required in use. 608.01 (n)
Correct Multiple Dependent Claim
“as in Claims 3 OR 4”
How many claims do you get for free?
You get three Independant Twenty (20) total claims **Any more than you pay more.
Can dependent claims rely on multiple dependent claims?
Yes, they count as much as the claim they depend on.
Can a multiple dependent claim rely on a multiple dependent claim?
No you may not. They count as once and is moved on.
Method Claims
What is actually required to deliver the invention. Does not have to lay out the entire process. Make sure you “obtain the article or whatever” Preamble is where you are going, steps take you there “A method _____, comprising (comprising the steps of)” You have to use “-ing” words. Order is not important unless you make it an issue by labeling as such creating an order. **ESSENTIAL LOOP: “Repeating Steps X-Y until ____” in Dependent Claims
Means plus Function 112(f)
Describing in functional terms as compared to structural terms. “means for cooling the workpiece during treatment” MUST describe the means in the specification. **Only risk is that the net is cast wide
Product-by-Process Claims
The style of writing a claim wherein the subject matter is characterized by the process, which leads to creation of the article. **MOST OFTEN USED AS A RED HERRING WRONG ANSWER.
How many claims does a Design Patent have and how does it look?
Only one “the ornamental design for a ______ as shown and described in the drawing”
How to read claims?
Word for Word When you see “said” or “the” look back for “a” or “an”
Drafting Claims with Ranges
Independent claim with the larger range. Followed by a dependent range that narrows the claim. **If not, the claim will be indefinite.
How to approach problems
- Get a sense of the invention and prior art. 2. Look for: - lack of antecedent basis -grammar - preamble doesn’t relate to claimed invention - claim is broader than the spec 3. Compare and contrast the remaining. 4. Go with the one that mimics the question more closely.
Jepson Claims
Preamble: prior art described, admitted “the improvement comprising” - point of novelty Don’t do this!!!
